- Apple Inc. v. Scramoge Technology Ltd.InstitutedPTAB · Sep 13, 2022 · IPR2022-00573 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–22 and 28 on all six asserted grounds, finding a reasonable likelihood of prevailing; it dismissed Apple’s joinder motion as moot.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In considering proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision, we “will consider the speed with which the district court case may come to trial and be resolved,” and we “will weigh this factor against exercising discretion to deny institution under Fintiv if the median time-to-trial is around the same time or after the projected statutory deadline for [our] final written decision.” Interim Procedure 9. Here, our projected statutory deadline for a final written decision is September 16, 2023. Based on a median time-to-trial of 27.2 months in the Western District of Texas, the expected trial date in the parallel litigation is in January 2024, which is about four months after our projected statutory deadline for a final written decision. This factor thus weighs against exercising discretion to deny the Petition. The remaining Fintiv factors do not sufficiently outweigh our consideration of the proximity of the court’s expected trial date to the Board’s projected statutory deadline for a final written decision to lead us to exercise discretion to deny institution. Accordingly, under the circumstances of this case, we decline to exercise our discretion to deny institution under § 314(a) in view of the parallel litigation.8” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” See 37 C.F.R. § 42.100(b) (2019). That standard involves construing claims in accordance with the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). Petitioner asserts that “no formal construction is ‘necessary to resolve’ the anticipation/obviousness issues raised in this Petition.” Pet. 5–6 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner does not respond. See generally Prelim. Resp. For purposes of this Decision, we conclude that no claim term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner directs us to where Flowerdew states, Two element inductive charging systems typically create a resonance in both the transmitting and the receiving coils for a given frequency. The resonance maximizes the current, and hence the flux density from a given drive voltage, and maximizes the receive voltage for a given intercepted flux. . . . When the number and type of secondary units being charged is variable, the power extracted from the field and the amount of permeable material and its distribution are ill defined and therefore the inductance and loss resistance seen in the resonant system are also ill defined. Changes in the inductance or loss resistance resulting from placement of one or[] more secondary units must be compensated for. Ex. 1007, 12:22–38 (cited by Pet. 54). To compensate for these changes, Flowerdew uses a resonance tuning circuit that varies the frequency of charging coils 312, 314 when secondary unit 304 is placed on the charging surface of primary unit 302, thereby keeping the system resonant. Id. at 12:58–62 (cited by Pet. 54–55). A sense coil near the driven coil provides a feedback signal to a microcontroller that produces the signal to the driver, and software allows for the output frequency to be adjusted to maximize the signal from the sense coil. Id. at 13:24–30 (cited by Pet. 55). Flowerdew explains that “[a]pplication of a variable frequency is predicated on the basis that the high efficiency achieved by driving a resonant system is needed for effective operation.” Id. at 13:30–35 (cited by Pet. 55). Petitioner contends that “Flowerdew thus discloses a microcontroller of the charger 302 (base unit) that monitors a ‘feedback signal’ from the sense coil, and that automatically adjusts an output frequency (at least one characteristic of said time varying electric current) responsive to the ‘feedback signal’ to achieve and maintain operation at the ‘resonant’ frequency of the coupled inductor system,” where “the ‘feedback signal’ from the sense coil constitutes “at least one parameter indicative of an efficiency of power transfer from said base unit to said target unit.’” Pet. 55. According to Petitioner, “the drive frequency is adjusted in response to the ‘feedback signal’ to ‘maximize an efficiency of power transfer’ from the charger 302 (base unit) to the secondary unit 304 (target unit).” Id. at 55–56. Petitioner asserts that “operating at the resonant frequency maximizes power transfer efficiency.” Id. at 56 (citing Ex. 1007, 12:24–26, 13:31–32). Based on Petitioner’s argument and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that Flowerdew teaches the recited monitoring and adjusting steps of claim 1.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner contends that “[i]t would have been obvious to implement Flowerdew’s charging circuit according to Jang’s suggested use of electronically-controlled switching elements for switching a DC voltage source to produce a time-varying electric current to apply to a primary inductive element (e.g., primary coils 312 and/or 314).” Pet. 64 (discussing claim 3). As support, Petitioner asserts that “a [person of ordinary skill in the art] would have looked to examples such as Jang for additional details as to how to implement aspects of Flowerdew’s charger 302, including oscillator 310––especially since Flowerdew acknowledges that the description of oscillator 310 in Flowerdew is ‘simplified’ (although Flowerdew expressly teaches that various designs/components can be adopted to implement the charging circuit).” Id. at 65 (discussing claim 3) (citing Ex. 1007, 6:8–13, 15:54–67). Based on Petitioner’s argument and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that its proposed combination of Flowerdew and Jang teaches the recited switch element of claim 12. We also are persuaded that Petitioner’s proffered reasoning for modifying Flowerdew’s charging system to include Jang’s inverter, namely, to provide a way to implement Flowerdew’s digital driver, is sufficient on this record. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,825,537 - Microsoft Corporation v. D3d Technologies, Inc.All claims unpatentablePTAB · Aug 22, 2022 · IPR2021-00648 · APJ Barbara A Parvis · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1, 5–7, 11–13, 17, and 18 as anticipated by Jones; claims 2–5, 8–10, and 14–16 as obvious over Jones and Schoolman or Murphy and Guang.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art the time of the invention would have had “at least a Bachelor’s degree in an academic area emphasizing electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with, teaching, or researching stereoscopic and/or virtual/augmented reality (VR/AR) display technologies.” Pet. 4 (citing Ex. 1003 ¶¶ 15–16). Petitioner further contends that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Id. At the institution stage in the proceeding, Patent Owner did not dispute Petitioner’s proposal. See generally Prelim. Resp. 5 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. We find that the phrase “at least” in Petitioner's proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. With that exception, considering the subject matter of the ’183 patent, the background technical field, and the asserted prior art, we otherwise agree with Petitioner’s proposed qualifications for an ordinary level of skill. Inst. Dec. 17. In its Patent Owner Response, Patent Owner asserts that it “mostly agrees with [Petitioner’s] position, but like the Board believes that the use of the term ‘at least’ is inappropriate inasmuch as it would extend to persons having more than ordinary skill.” PO Resp. 18. We maintain our finding at the institution stage that the phrase “at” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“k) Conclusion Based on the complete record now before us, we find that Petitioner has shown that Jones discloses each recitation of claim 1. Accordingly, we determine that Petitioner has proved, by a preponderance of the evidence, that claim 1 is unpatentable under 35 U.S.C. § 102 as anticipated by Jones.” slip op. at 62
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“l) Conclusion For the reasons given, we are persuaded that Petitioner establishes that the combination of Murphy and Guang teaches all limitations recited in claim 1. Also, we are persuaded that Petitioner has articulated reasoning with a rational underpinning as to why one of ordinary skill in the art would have combined the teachings of Murphy and Guang in the manner recited in claim 1. Accordingly, based on the complete record now before us, Petitioner” slip op. at 125
Patent outcomesUS 9,349,183 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,349,183 - Microsoft Corporation v. D3d Technologies, Inc.All claims unpatentablePTAB · Aug 3, 2022 · IPR2021-00647 · APJ Scott Raevsky · IPR · Final written decision
Claims 1–21 are unpatentable because Murphy anticipates or renders them obvious; the Board did not reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “mostly agrees with this position, but like the Board believes that the use of the term ‘at least’ is inappropriate inasmuch as it 6 Patent Owner has not submitted any objective evidence of nonobviousness. would extend to persons having more than ordinary skill.” PO Resp. 18. We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’771 patent and prior art of record. We adopt Petitioner’s definition of the level of skill but delete the two qualifiers “at least” to keep the articulation from extending to the realm of an expert.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“As Petitioner correctly points out, the claim requires “selecting items of said image to be subtracted from said image to produce a filtered image,” or in other words, “the subtraction is being applied to the image.” Reply 4 (citing Ex. 1035 ¶ 8) (emphasis changed). Nothing in the claim explicitly requires “actual elimination of data (voxels) from the underlying three-dimensional model from which the images are created,” as Patent Owner urges. See PO Resp. 21. To the contrary, the plain claim language states that it is the image that is filtered. Thus, absent some definition or disclaimer in the intrinsic record (whether explicit or implicit), there is no requirement to eliminate underlying data. See Trustees of Columbia University v. Symantec, 811 F.3d 1359, 1363–64 (Fed. Cir. 2016). There is no such definition or disclaimer in the Specification. Rather,” slip op. at 12
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We further find persuasive Dr. Zyda’s opinion that “[n]ot only would such “subtraction” be inconsistent with the claim language, it would be inconsistent with a POSITA’s desire to quickly and efficiently manipulate 3D images in real time by, for instance, repeatedly removing and re-adding different tissue sections.” Id. (citing Ex. 10017, 10:12–17). We find Dr. Zyda’s testimony more credible than Dr. Bajaj’s, as Dr. Bajaj was unable to supply a credible answer for where the patent describes reloading deleted volume data from an archive. See Ex. 1036, 31:12–44:10. Instead, Dr. Bajaj relied on the ’771 patent’s generic disclosure that “the user can then select additional tissues for removal . . . or to be re-added.” See id. at 32:12, 43:7; Ex. 1001, 10:12–17. But, as the previously quoted sentence explains, the disclosure of “removal” or “re-added” refers to displayed tissues, not the underlying data. Ex. 1001, 10:12–17. As the ’771 patent lacks any discussion of deleting underlying data and reloading such data from an archive, we credit Dr. Zyda’s testimony that a POSITA would not have done so in order to more “quickly and efficiently manipulate 3D images in real time.” Ex. 1035 ¶ 8.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. Patent Owner’s arguments rely on a claim construction that we have not adopted. As we explained above, we construe “subtracted” to mean “withdrawn or taken away, as a part from a whole.” Petitioner relies on Murphy’s “ability to [h]ide and show each anatomical feature” (Ex. 1010 ¶ 32); “arbitrarily-chosen regions of the Virtual Patient can be made transparent” (id. ¶ 44); and “they can cut away sections arbitrarily with cutting planes, spheres, etc.” (id. ¶ 57). Pet. 66. Murphy’s hiding, cutting away, and making items completely transparent teaches withdrawing or taking away items from an image. See Ex. 1003 ¶ 184. We credit Dr. Zyda’s testimony that “[one of ordinary skill in the art] would have understood that selecting items of the image to be hidden, cut away, or otherwise made transparent corresponds to subtracting the selected items from the image to produce a filtered image.” Id., cited in Pet. 66. Contrary to Patent Owner’s assertions, we do not view Dr. Zyda’s testimony as defective because Murphy’s teachings corroborate Dr. Zyda’s testimony under our construction of “subtracted.” Compare id., with Ex. 1010 ¶¶ 32, 44, 57. Accordingly, Petitioner has persuasively shown that Murphy discloses” slip op. at 20
Patent outcomesUS 8,384,771 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,384,771 - PTAB · Jul 13, 2022 · IPR2022-00165 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–3 and 6–10 on every asserted ground after finding a reasonable likelihood of success for at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Guidance Memo”). The Guidance Memo states: “[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo at 3. Petitioner states: “Petitioner already stipulated that if IPR is instituted it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in an IPR. This favors institution. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential).” Prelim. Reply 5 (emphasis added). With regard to this representation by Petitioner, Patent Owner asserts: “There is no such stipulation of record in this matter or in the District Court, [See EX2018], nor has Petitioner ever provided any such stipulation by any other means.” Prelim. Sur-reply 4. Petitioner’s averment itself constitutes written representation to the Board that if inter partes review is instituted in this proceeding it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in this proceeding. Because Petitioner has represented to the Board that if inter partes review is instituted it will not pursue in the parallel litigation any ground that is raised or that could have reasonably been raised in an IPR, we decline to deny the Petition discretionarily. Guidance Memo at 3.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The “reasonable likelihood” standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims and on each ground set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 2009 ¶ 23.6 Based on the language “[i]f the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis,” we read the above-quoted testimony of Dr. Surati as indicating that in rendering his opinions, he has assumed the level of ordinary skill as stated by Mr. Willis, and that he has restated that level of ordinary skill more simply as: “a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems.” Petitioner’s assertion is supported by the testimony of Mr. Willis. Ex. 1004 ¶¶ 32–35. Petitioner’s assertion also appears consistent with the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Given that Patent Owner has not disputed Petitioner’s assertion of the level of ordinary skill in the art, we adopt Petitioner’s primary statement of the level of ordinary skill in the art, but exclude Petitioner’s “alternative” statement for reasons discussed above. B.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner has not proposed a specific construction for any claim term, and states that no express construction is necessary. Pet. 5. Further, Petitioner states that it interprets claims according to the standard set forth in Phillips. Id. Patent Owner has proposed an express construction for the term “event.” Also, the parties’ arguments reveal conflicting understanding and interpretation of the term “alternative title.” Patent Owner argues that in the context of the ’179 patent, an event is a “detectable condition of a system that can trigger a notification.” Prelim. Resp. 16. On the current record, however, we are uncertain that Patent Owner’s construction is the correct construction. For example, the ’179 patent explains that the method possesses “an event, such as by way of example but not limitation, a new mail event, a new instant message event, a reminder event, a calendar event, or some other event, and generating a string of characters that includes information associated with the event.” Ex. 1001, 2:3–7 (emphasis added). The quoted text appears broad. The ’179 patent states that the events used in the embodiments are merely examples. Id.; see also id. at 12:30–32 (“As used herein, the term ‘embodiment’ means an embodiment that serves to illustrate by way of example but not limitation.”). We have no need, however, to provide an express construction for “event,” because even under Patent Owner’s proposed construction for event, as explained in the discussions of the alleged grounds of unpatentability below, Petitioner has made a sufficient showing for institution purposes.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,402,179 - PTAB · Jul 13, 2022 · IPR2022-00164 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–3 and 6–10 on all grounds, finding a reasonable likelihood of success on obviousness over Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“According to our precedent, one way to mitigate those concerns is for a petitioner to present a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the Board. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential); accord Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022) (“Consistent with [Sotera], the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”).3 Such a “stipulation ensures that an inter partes review is a ‘true alternative’ to the district court proceeding.” Sotera, Paper 12 at 19 (citing Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 12 n.5 (PTAB June 16, 2020) (informative, designated July 13, 2020)).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. And we have not been provided a sufficient reason to exercise our discretion to deny institution. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s alternative definition that “a PHOSITA would possess equivalent additional formal education such as graduate studies, or work experience to replace formal education” is unclear or, at best, does not meaningfully contribute to the first definition. See id. For example, Petitioner does not explain whether or how additional graduate studies would be both equivalent and additional to the education described in the first definition. See id. “would be someone with a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems.” Prelim. Resp. 15 (citing Ex. 2009 ¶ 23). Patent Owner’s declarant, Dr. Surati, testifies: It is my belief that a POSITA [person with ordinary skill in the art] of the ‘135 patent would have possessed: a bachelor’s degree in computer science or electrical engineering, along with two or more years of experience with instant messaging and web-based servers and client systems. If the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis. As noted above and on my CV [Ex. 2017], my qualifications exceed this description. Ex. 2009 ¶ 23 (emphasis added). The italicized sentence in the paragraph above is ungrammatical and unclear. It could be interpreted in multiple contradictory ways: The sentence could mean that, in rendering his opinions, Dr. Surati has assumed the level of ordinary skill as stated by Dean Willis. Or it could mean that, “if the qualifications of a POSITA were as stated by Petitioner’s expert Dr. Willis,” Dr. Surati’s qualifications exceed those qualifications. Nevertheless, we see no meaningful difference between Petitioner’s definition and Patent Owner’s. Rather, Patent Owner’s definition appears to be a simplified version of Petitioner’s. To the extent that Patent Owner disagrees, Patent Owner is encouraged to explain how the differences affect the obviousness analysis. Also, we preliminarily determine that Petitioner’s definition is supported by the testimony of Dean Willis (Ex. 1004 ¶¶ 32–35) and is consistent with the level of skill reflected in the asserted references (cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect an appropriate level of skill in the art)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We need only construe terms that are in controversy and to the extent necessary to resolve the dispute. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner argues that “[i]t is not necessary for the Board to resolve this claim construction dispute for purposes of this Preliminary Response because both Prelim. Resp. 59 n.5. We agree with Patent Owner on this point. See id. That is, we construe the term “title array” to require a data structure, which is not disputed. But other than that, we need not further construe the term at this stage.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,230,135 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Scramoge Technology Ltd.InstitutedPTAB · Jun 23, 2022 · IPR2022-00385 · APJ Jameson Lee · IPR · Institution
The Board instituted review of claims 1, 4, 5, 8–13, and 17–22 on all petitioned grounds, finding a reasonable likelihood of unpatentability based on Hiroki anticipation and Hiroki–Akiho obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“the petitioner in IPR2022-00117. Petitioner here also represents that none of its real parties in interest is related in any way to the petitioner in IPR2022- 00117. Prelim. Reply 5. Petitioner further represents that it has not coordinated in any way with the petitioner in IPR2022-00117 with regard to challenging the ’215 patent before the Board. Id. Petitioner additionally notes that it and the petitioner in IPR2022-00117 are not even codefendants in the same district court litigation, were not sued by the Patent Owner at the same time, and were sued on the basis of each’s own separate products. Id. at 6.6 With respect to such lack of relationship, Patent Owner makes no contention to the contrary. For the foregoing reasons, General Plastic Factor 1 weighs very strongly against exercising discretion to deny the Petition. 2. Factors 2–5 Regarding Factor 2, Patent Owner points to no evidence that as of the filing of the petition in IPR2022-00117 on November 3, 2021, Petitioner knew of any of the references applied in the Petition at issue in this proceeding. General Plastic Factor 2 weighs against exercising discretion to deny the Petition. Regarding Factor 3, the Petition here was filed on December 31, 2021, prior to the filing of Patent Owner’s preliminary response and the Board’s institution decision in IPR2022-00117. Patent Owner points to no evidence of Petitioner using any Board decision or Patent Owner submission as a roadmap to prepare the Petition. General Plastic Factor 3 weighs against exercising discretion to deny the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“2. Fintiv Factor 2 It is undisputed by the parties that the district court has now scheduled trial in both the parallel litigation involving Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., and the parallel litigation involving Google LLC for March 6, 2023. Prelim. Reply 2–3; Ex. 1031. The trial date of March 6, 2023 is approximately four months prior to the expected time of a final written decision in this proceeding. Fintiv factor 2 weighs in favor of exercising discretion to deny the Petition.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“e) Conclusion Petitioner has shown a reasonable likelihood that it would prevail in establishing that claim 1 is anticipated by Hiroki.” slip op. at 37
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“crystalline alloy, as claimed. Ex-1002, ¶¶ 115–116; Ex-1015, 1:13–15; Ex- 1007, [0015]; Ex-1018, 1:38–39.” Pet. 29. However, paragraph 41 of Sakuma, cited by Petitioner, describes Sakuma’s embodiment as shown in Figure 7, not Sakuma’s embodiment as shown in Figure 2A. Ex. 1005 ¶ 41. As discussed above in Section II.C.2, the embodiment disclosed by Sakuma with respect to its Figure 2A is structurally different from the embodiment disclosed by Sakuma in Figure 7. Whereas in the Figure 2A embodiment soft magnetic sheet 11 comprises separate magnetic tile pieces 311 arranged in a single loop and a single layer, in the Figure 7 embodiment soft magnetic sheet 11 comprises not magnetic pieces arranged in one layer but two stacked magnetic sheets. Ex. 1005 ¶¶ 28, 29, 40, 41. Sakuma does not identify “sendust” as usable material for magnetic pieces 311 in the Figure 2A embodiment. Id. ¶ 42. Petitioner does not provide any reason why one with ordinary skill in the art would have read Sakuma’s disclosure of “sendust” as also describing any magnetic piece 311 in the Figure 2A embodiment of Sakuma. We are not sufficiently persuaded, for institution purposes, that Sakuma discloses using “sendust” as the material for any magnetic piece 311 in Figure 2A. d) Conclusion Petitioner has not shown a reasonable likelihood that it would prevail in establishing anticipation of claims 1 and 13 by Sakuma. 4. Dependent Claims 8, 9, 11, 17, 19, and 21 Claims 8, 9, and 11 each depend directly from claim 1. Ex. 1001, 10:46–61. Claims 17, 19, and 21 each depend directly from claim 13. Id. at 12:10–28. Each dependent claim incorporates all the limitations of the claim on which it depends. For the same reasons discussed above in the context of claims 1 and 13 regarding limitation 1[i] and limitation 13[j], Petitioner has not sufficiently shown that Sakuma discloses those limitations. Accordingly, Petitioner has not shown a reasonable likelihood that it would prevail in establishing anticipation of claims 8, 9, 11, 17, 19, and 21 by Sakuma. D.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,843,215 - PTAB · Feb 22, 2022 · IPR2021-01333 · APJ Robert J Weinschenk · IPR · Institution
Instituted IPR of claims 18, 26, 27, 29, and 31 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“District Court would grant a stay of the District Court Litigation. Neither party identifies any statements by the District Court or other evidence that specifically addresses a stay of the District Court Litigation. See Pet. 60–61; Prelim. Resp. 15. And “[a] judge determines whether to grant a stay based on the facts of each specific case as presented in the briefs by the parties.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). “We decline to infer, based on actions taken in different cases with different facts, how the District Court would rule should a stay be requested by the parties in the parallel case here.” Id. As a result, we determine that the first Fintiv factor is neutral.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a) (2021). Based on the arguments and evidence of record, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’252 patent is unpatentable. Accordingly, we institute an inter partes review as to the challenged claims of the ’252 patent on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a “Bachelor of Science in Electrical Engineering, Computer Science, Computer Engineering, or equivalent, and one to two years of experience working with image processing, image recognition, or a related field.” Pet. 17 (citing Ex. 1003 ¶ 43). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jeffrey Rodriguez. Ex. 1003 ¶ 43. Patent Owner does not propose a description of the level of ordinary skill in the art or dispute Petitioner’s description. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 18. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 7,899,252 - Bank Of America, N.A. v. Nant Holdings IP, LLCInstitution deniedPTAB · Feb 15, 2022 · IPR2021-01389 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Bank of America did not show that Rhoads anticipates claims 1 and 3–5, failing to establish that document validity is determined using the image.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“and the symbol information,” as recited in claim 1. By its express terms, this limitation requires determining a validity of a document based on two things: (1) the image; and (2) the symbol information. Rhoads arguably discloses determining a validity of a document based on the symbol information, for example, the “Bedoop data” extracted from an ID badge. Pet. 36; Ex. 1022, 17:1–16; 17:23–31, 17:46–59. But Petitioner does not show sufficiently that Rhoads discloses determining a validity of a document based on the image, for example, an image of the ID badge.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“and the symbol information,” as recited in claim 1. By its express terms, this limitation requires determining a validity of a document based on two things: (1) the image; and (2) the symbol information. Rhoads arguably discloses determining a validity of a document based on the symbol information, for example, the “Bedoop data” extracted from an ID badge. Pet. 36; Ex. 1022, 17:1–16; 17:23–31, 17:46–59. But Petitioner does not show sufficiently that Rhoads discloses determining a validity of a document based on the image, for example, an image of the ID badge.” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“We find that Petitioner’s definition of a POSITA is consistent with the scope and content of the ’278 Patent and the asserted prior art, and we apply this definition for purposes of this Decision.” slip op. at 7
§ 102 anticipationcites PhillipsPatents in suitUS 9,031,278 - Shenzhen Carku Technology Co., Ltd. v. The Noco CompanySome claims unpatentablePTAB · Nov 3, 2021 · IPR2020-00944 · APJ Jameson Lee · IPR · Final written decision
Claims 1–10 and 12–23 are unpatentable over the listed grounds; claim 11 was not shown unpatentable because the evidence did not establish the claimed connection sequence.
RulingsFinal written decision- Expert testimonyOther
“Q. So Richardson contemplates a flow of control where the shunt calibration flag was not set, correct? A. That is reasonable. He shows an option -- an option of a “no” result from Step 406. Ex. 1047, 110:14–18. Dr. Wood also agrees that when the shunt calibration flag is not set and the procedure advances to Step 420, the contact relay in Richardson is still open: Q. Now, if the shunt calibration flag is not set and we go to Step 420, the starter contact relay in Richardson is still open, correct? A. That is my understanding. Id. at 77:10–13. Dr. Wood further agrees that when the shunt calibration flag is not set and the procedure advances to Step 214, where reverse polarity connection is tested, the starter contact relay is still open: Q. Okay. Then if we continue to Step 214 in this example, where the shunt calibration flag was not set, when we’re testing for the condition reverse jumper cable voltage, the starter contact relay is still open, right? A. That appears to be the case.” slip op. at 65
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Referring to FIG. 3, Klang states: “[t[he reverse polarity sensor 48, connected in a like manner across the battery terminals 20, 22, senses negative voltage indicating that the battery leads are connected backwards.” Ex. 1007, 6:20–23. Klang’s reverse polarity sensor provides an output signal (sensed negative voltage) indicating whether the battery has a proper polarity connection. Klang states: “[i]f the start button has not been pressed, at step 144, the OCV [battery open circuit voltage] is compared to a low negative voltage to determine whether the conducting cables 18 are properly connected to the battery 16. If the OCV is less than -0.5V, the method proceeds at step 146 to notify the operator that the leads are reversed.” Ex. 1007, 8:55– 60.” slip op. at 26
- Obviousness (§103) › Objective indicia / secondary considerationsNot reached
“references. Accordingly, consideration and discussion of the objective evidence of nonobviousness is unnecessary.” slip op. at 92
- ExcludeMotion to exclude, deniedDenied
“discussed below, the Motion is denied.” slip op. at 94
Patent outcomesUS 9,007,015 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,007,015 - Peddinghaus Corporation v. Ficep CorporationRehearing deniedPTAB · Oct 8, 2021 · IPR2020-01707 · APJ Jameson Lee · IPR · Rehearing
The Board denied Peddinghaus’s rehearing request, finding no abuse of discretion in denying institution on claims 1–14 because Hashimoto did not disclose the claimed intersection parameters.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Reh’g Req. 7–8. Although Petitioner avers that the “identifying” of intersection parameters, or connecting holes, is completed in Hashimoto by the member totaling module before any order list is prepared, the order list is pertinent evidence for that assertion and there is nothing inappropriate in discussing that evidence. We recognize no other evidence which was identified by the Petitioner in the Petition, and Petitioner points to no such other evidence that we overlooked. Indeed, Petitioner states: “The Petition references the order list depicted in Figure 19 as merely providing a summary of the information (the ‘total’) that was previously identified and extracted by the member totaling module.” Id. at 8 (emphasis added). As we stated in our Decision, Petitioner points to no description or disclosure in Hashimoto that its member totaling module recognizes the difference between a connecting hole, or intersection parameter, from a nonconnecting hole. Dec. 27. Hashimoto’s member totaling module “automatically totals, by cross section or length, the information including the shape, length, quantity, hole shape and the hole position (design drawing information) of all the light gauge sheet steel used for the steel house existing in the CAD system” and “[b]ased on this total, an order list (steel member order list) is prepared (FIG. 19).” Ex. 1005 ¶ 101. Nowhere in this exhaustive list of hole information, however, is mentioned any data that identifies the difference between a connecting hole, or intersection parameter, and a non-connecting hole. Further, Petitioner’s statement on page 8 of the Rehearing Request that “hole shape” and “hole position” constitute intersection parameters is not persuasive because, from this information, it is unknown how the hole is intended to be used. Moreover, the order list of Figure 19 – which “merely shows the number of holes and the die numbers and positions of where those holes are formed”1 – is the only indicated output of the member totaling module.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“meaning of “fastening holes” changes from the first to second embodiment.3 For example, in the Background section of Hashimoto, “fastening holes” are defined generally as holes formed “in the light gauge shape steel for the fastening tools.” Ex. 1005 ¶ 4. The same Background paragraph provides examples of “fastening tools such as a tapping screw and a one-side rivet.” Id. (Emphasis added). Thus, this definition does not strictly limit fastening holes to connecting holes, since it does not foreclose the likely possibility of fastening tools including wires or wiring. Moreover, a “machine for forming the fastening holes” is also disclosed in the Background, the same “non-stationary fastening hole forming machine 5” discussed in Figures 20-21 of the second embodiment. Id. ¶ 5. Thus, when “fastening holes for passing the electrical wiring” (emphasis added) are disclosed in the discussion of Figures 20-21 in Hashimoto’s paragraph 154, there is no evidence suggesting that a different type of “fastening hole” other than what has been generally described in the Background is being mentioned. Id. ¶ 154. The same applies for the 3 The statement made in footnote 3 on pages 11–12 of the Rehearing Request that the only holes in Figure 18 are joints only establishes that the holes in Figure 18 may be connecting holes, not all “fastening holes” in Hashimoto. disclosure that “fastening hole information includ[es]…[where] the wiring holes [are] formed in the stud” in paragraph 156 and how character c in Figure 23 “designates a hole for electrical wiring or a fastening hole for mounting the stud on the structural face plate” (emphasis added) in paragraph 157. Id. ¶¶ 156–157. Thus, it is a much more reasonable reading that in all embodiments of Hashimoto, the definition of “fastening holes” includes both connecting holes and non-connecting holes – such as those for wiring.” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As we stated in our Decision, Petitioner points to no description or disclosure in Hashimoto that its member totaling module recognizes the difference between a connecting hole, or intersection parameter, from a nonconnecting hole. Dec. 27. Hashimoto’s member totaling module “automatically totals, by cross section or length, the information including the shape, length, quantity, hole shape and the hole position (design drawing information) of all the light gauge sheet steel used for the steel house existing in the CAD system” and “[b]ased on this total, an order list (steel member order list) is prepared (FIG. 19).” Ex. 1005 ¶ 101. Nowhere in this exhaustive list of hole information, however, is mentioned any data that identifies the difference between a connecting hole, or intersection parameter, and a non-connecting hole. Further, Petitioner’s statement on page 8 of the Rehearing Request that “hole shape” and “hole position” constitute intersection parameters is not persuasive because, from this information, it is unknown how the hole is intended to be used. Moreover, the order list of Figure 19 – which “merely shows the number of holes and the die numbers and positions of where those holes are formed”1 – is the only indicated output of the member totaling module.” slip op. at 3
Claim construction§ 102 anticipationPatents in suitUS 7,974,719
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.